Mr.Ulrich Joos: Acceleration and streamlining of proceedings we expect from the shift to further processing

On the December 13, 2007 the amended EPC 2000 entered into force. The changes aim to make the system more flexible and effective, in line with the economic development and adequate to the users’ needs. We wanted to know more about the most important amendments and how they will reflect on the processes in the system. That is why we asked directly EPO’s officials. Mr.Ulrich Joos, Lawyer in International Legal Affairs Department in the European Patent Office in Munich was very kind to give us profound and comprehensive answers.

What are the most important things that people working with EPO should know about EPC 2000?

The revised EPC entered into force on 13 December 2007. The new law replaces the previous law and, with few exceptions, the new provisions apply also to cases already pending on the date of entry into force. This is possible because the changes to substantive patent law are marginal and the procedural structures of grant, opposition and appeal proceedings remain unchanged. The new possibilities offered to applicants and patentees under the EPC 2000 are options which may but need not be used.

The EPC 2000 provides a number of new opportunities for the applicants. What effects on the procedure should these opportunities have?

The new opportunities are, in particular, the relaxed filing date requirements, the central limitation procedure and the petition for review of a decision of a board of appeal by the Enlarged Board of Appeal. The relaxed filing date requirements make it easier to get a filing date and to correct formal mistakes but before the EPO can start search and examination of the application the latter must fully comply also with the other requirements of a European patent application and, in particular, claims must be there. The possibility to request the limitation of a granted European patent is a valuable option if the validity of the patent is attacked in national proceedings. Simple and efficient limitation proceedings before the EPO can avoid expensive litigation before national courts. Acceleration and streamlining of proceedings we expect from the shift to further processing as the standard legal remedy: By just paying a fee and completing the omitted act the failure to observe a time limit can be remedied. In future, the burdensome and time-consuming re-establishment of rights procedure will be relevant only in exceptional cases.

One of the substantive changes refers to Article 54, namely „Novelty“. How could the applicants benefit from the new version of this Article?

All European patent applications filed before and published after the application under examination will be prior rights under the revised Article 54 EPC. This approach is simpler than the previous one and in line with the clear tendency that all EPC contracting states are designated in European patent applications. It can also contribute to accelerating proceedings as the relevant state of the art can be established at an early stage of proceedings.

Up to now the practice with regard to patent protection for a second medical indication was not uniform in the EPC contracting states. The new Article 54(5) EPC on the patentability of a second medical indication now provides a clear legal basis for such claims thereby enhancing legal certainty with regard to protection for such inventions in all EPC contracting states.

Speaking about the advantages of the EPC 2000 we inevitably have to take into consideration also the existing disadvantages in the system. Maybe there are only few of them, but could you point them out?

The amendments of the EPC 2000 relate, in the first instance, to internal, i.e. EPC related issues like making the legislative procedures more flexible and suitable to react to future challenges. The limitation procedure and the petition for review comply with long felt needs of the user community.

The disadvantages of the current system could not be addressed in the framework of the EPC revision in 2000, namely the costly translation requirement and the lack of a European patent court. In this respect, the London Agreement on the application of Article 65 EPC should be mentioned which could enter into force very soon and considerably reduce translation costs for granted European patents. Initiatives to set up a European patent court had been launched by intergovernmental conferences of EPC contracting states (the EPLA project) and by the European Union (the Community patent and a related court system); however, no agreement on one of the concepts could be reached up to now.

A lot of provisions are moved from the Convention into the Implementing Regulations. In practice, it means that they can be amended by the EPO Administrative board. Don’t you think that in this way a lot of responsibilities are concentrated in the Administrative Board?

Mr.Joos: The body you are referring to is the Administrative Council. This is the supervisory organ of the European Patent Organisation composed of high-ranking representatives of the EPC contracting states. This body has had political functions and legislative powers from the very beginning of the EPO. Under the revised Convention these powers appear to be wider. However, they still do not relate to the basic principles of European patent law but to procedural details or to issues intensively discussed within the European Union and already adopted by the parliaments. Experience shows that the revision of multilateral international treaties by diplomatic conferences becomes more and more difficult and an exercise lasting at least several years. However, technical adaptations of international legal texts in response to new developments must be possible. The revised EPC is well balanced in distributing responsibilities between the level of a diplomatic conference and the Administrative Council of the European Patent Organisation.

Do you think that changes made in the EPC are consistently harmonized with the national legislation of the member states?

Mr.Joos: It is much more the EPC which has an harmonising effect on the national patent laws. The EPC is a self-executing treaty and its substantive patent law applies to European patents also during the national phase. The harmonisation with the EPC of substantive patent law in the EPC contracting states is a soft harmonisation as most states take the view that European and national patents should be governed by the same rules even if in theory different solutions would be possible. The EPC revision did not change this situation. Most, if not all contracting states implemented the amendments related to the substantive patent law of the EPC also on the national level. As most amendments in the revised EPC directly relate to procedures before the EPO they do not influence national law.

What kind of difficulties do you expect to encounter during the transitional phase?

Mr.Joos: The main difficulties were expected in the two months before entry into force of the revised EPC because during this period all communications with applicants and patentees were revised to take account of the new law. However, due to a careful preparation of this shift to the new law everything went very smoothly and without major incidents. In the months to come we expect questions relating to the new law. It is also normal that unexpected situations have to be tackled under the new law. The boards of appeal will have to contribute to the interpretation of the new provisions, too. We will also closely monitor applicants behaviour and practice under the new law.

When we can see the effect of changes in reality?

Mr.Joos: The effect of the relaxed filing date requirements and of the new procedures is immediate for the users of the European patent systems. For the EPO it will be interesting to learn how often the new possibilities will be used. Of course, few days after entry into force of the new law nothing can be said.